(165) Helpful Hints
o Trademark Post Registration - Failure to Specify Type of Commerce in
Section 8 Affidavits or Declarations--Section 8(a) of the Trademark Act
requires that before the end of the sixth year following registration,
showing that the "mark is in use in commerce." [15 U.S.C. 1058a].
The Trademark Rules require that all Section 8(a)
affidavits or declarations "state that the registered mark is in use in
commerce and specify the nature of such commerce." [37 C.F.R. Section
2.162(e)].
The affidavit or declaration must be filed between the fifth and
sixth year following the date of registration and it must contain a
statement that the "mark is in use in commerce," with evidence thereof.
There may be no extensions of time beyond the sixth year for submission
of this statement and evidence of use of the mark in commerce.
However, if the timely-filed affidavit or declaration does not set forth
the type of commerce, the registrant will be given six months to submit
that information even though the sixth year may have expired. The rules
do not provide for any further extensions of time beyond the six months.
(Carlisle Walters, 703-557-3061)
o Backlogs in Trademark Renewals and Section 8 Affidavits and
Declarations--Registrants are advised that a backlog currently exists in
the processing of Trademark Renewals and Section 8 affidavits and
declarations. While the Patent and Trademark Office conducts a
preliminary review of critical elements in order to notify registrants
of statutory deficiencies prior to the expiration of the statutory
period for the submission of required documents, the ultimate
responsibility for complying with the requirements of the statute and
the rules rests with the registrant. (Carlisle Walters,703-557-3061)
July 1, 1988 THERESA A. BRELSFORD
Assistant Commissioner
for Administration
[1092 TMOG 11]